The following is an edited transcript of my video 25 Reasons to Use a Trademark Attorney.
- You’re working with an expert—a field and subject matter expert.
- An attorney acts as your advisor, and uses that expertise and experience to provide advice.
- The advice is going to be important because there are many strategic decisions and factors that go into trademark protection.
- An attorney is going to know about searching, which is key to making sure that a trademark has a high likelihood of success.
- An attorney is going to know about the rules, which are very important to knowing how the system works, what can be protected, how to deal with the dispute, etc.
- An attorney is going to know about the procedures. Procedures in the law can sometimes be make or break. If you don’t know the proper procedures, it may not matter how brilliant or great your trademark is. You might have trouble getting it registered.
- An attorney is going to know how to address substantive refusals. When they come up—which is not infrequent—is incredibly important.
- There’s a lot of nuance to this area, and working with an attorney is going to be with someone who can help understand and know that nuance.
- Deadlines that come up in the trademark process. It’s very important to know what those deadlines are when they apply, and how to calculate them.
- An attorney is going to use software. Software is going to help manage deadlines, calculate dates and responses, and monitor the status of the application. This is a very important resource in the trademark process.
- In order to file anything at the USPTO, you have to have a login, which is a complex process in and of itself. If you work with a trademark attorney, they’ve already got the login, saving you time.
- An attorney is going to know about the different application options. There are a lot of different options that go into just choosing what type of application to file.
- An attorney is going to know about the different descriptions of goods and services.
- An attorney is going to know about the pros and cons of filing for a logo versus a word mark.
- An attorney is going to know about evidence of use and what type of evidence is acceptable and why. That’s key.
- An attorney is going to know about the fees so that you can understand going into it what the different government fees for the different steps along the way are likely to be.
- An attorney is going to know about ownership, how to identify the proper owner, and why that is a key component to an application.
- An attorney is going to know about signatures, who can sign an application, and why the signature and the decoration is very important.
- An attorney is going to know about the timeline. It’s the long and winding road. Knowing the timeline and having experience dealing with it helps a lot with managing the process.
- An attorney is going to know about dates of use, which is another key element that goes into a trademark application filing.
- An attorney is going to know about domicile address and why that’s important.
- An attorney is going to know about publication for opposition and how and when and why that takes place.
- They’re going to know about renewal dates and how to calculate them.
- Once you already receive your registration, an attorney is going to know about renewal requirements, which are not exactly the same as application requirements but are necessary to continue the lifespan of a trademark.
- Finally, working with an attorney is going to help shield the applicant from scammers. Unfortunately, it may not make all the scammers go away, but it will help shield because there are innumerable amounts of scams.
